Useful Considerations When Filing A PCT Application In ASEAN

The Patent Cooperation Treaty (PCT) came into force in 1978 after being ratified by 18 countries and has since become the preferred method of filing patent applications for most applicants with plans to file in several contracting states. An applicant can secure a filing date in all 143 member countries. (The newest PCT contracting state, Qatar, is bound by the PCT and will be automatically designated in all international applications filed on or after 3 August 2011) PCT Members from the 10 major Asian countries are Japan, China, India, South Korea, Singapore, Malaysia, Indonesia, Philippines, Thailand, and Vietnam. When filing a PCT application, an applicant enters the international phase of the process by filing a single application in their home patent office or with the International Bureau of WIPO (IB) acting in its capacity as a receiving Office.

Following filing, the applicant receives an international search report and advisory opinion on the novelty, inventive step and industrial applicability of the claimed invention, an international publication, and an option to order both supplementary searches, and the opportunity to work with an international examiner for further prosecution of the application. The applicant is given at least 30 months from the priority date to decide where to pursue patent protection by entering the national phase of the process – 18 months more than is available under the Paris Convention. Given these advantages and the broad range of Asian countries party to the PCT, PCT filing has become popular for applicants seeking patent protection in Asia as well as applicants from the PCT contracting states in the region.

As popular as the PCT has become, there are some issues that first-time applicants need to consider when filing in Asia.

Distribution of PCT applications by country of origin

Disclosure requirements

Since the applicant only files a single international application, it must have a one-size-fits-all disclosure. However, disclosure requirements vary by country. If the disclosure filed does not meet all the requirements of each country where national phase entry is contemplated, the applicant may find the filing is inadequate to secure the full scope of protection desired. This is particularly important in countries like Japan which require the claims to be supported with examples across the entire range of each variable in the claims. China, for example, requires the best mode known to the applicant at the time of filing be disclosed. The applicant must be fully aware of the requirements in each country of interest and to ensure the disclosure meets all the requirements of the most stringent country.

Claiming style

There are several different ways of claiming across the PCT member states. Some countries, like Singapore, allow multiple dependent claims from other multiple dependent claims, while others like Philippines and China do not. In Vietnam, for example, reference to more than one independent claim is not allowed, as each claim must refer to one subject matter only. For the greatest efficiency during the national phase, an applicant should choose the claiming style best suited for the majority of countries where patent protection is desired for the PCT filing, also taking into account the claiming style preferred by the country that will be conducting the search during the international phase. For countries requiring another style of claiming, preliminary amendments should be filed at national phase entry putting the claims into acceptable format.

Patentable subject matter

While much of the world is standardised on what is and is not patentable there are still variations. For example, Singapore allows secondary uses of know items to be patentable, while others like India do not. Also in India, parts of plants and animals are not patentable. Unlike the US, which allows methods of medical treatment to be patented, most Asian countries do not. However, alternate Swiss-type claiming language may allow claims having a similar overall effect to be granted in countries like China, the Philippines, Indonesia, and Singapore. Knowing what is and is not allowed is important during the PCT search as international searching authorities are not required to conduct searches on matter not patentable to their associated national offices. This could result in the applicant paying a search fee and only receiving a declaration that no search report could be established

National security

Several countries have requirements that a new invention made within their territory, or, alternatively, made anywhere in the world by their residents, must be first filed in their country to allow a required check that making the invention public does not violate local national security laws or that a special license has been obtained to allow first-filing elsewhere. These countries include China, India, Malaysia and Singapore, but not Japan or Indonesia. While these requirements are, in general, easy to comply with, violating these laws can result in the loss of local patent protection up to and including imprisonment in cases where the country concludes national security has been breached. This issue becomes increasingly complex as more inventions are being patented in multiple countries. All such laws must be complied with and it is sometimes challenging to coordinate the first-filing with securing the necessary licence(s) in other countries with requirements where partial inventive activity took place. The burden of meeting all national security requirements lies with the applicants.

One of the keys to a successful PCT filing is having a good grasp on the local requirements in each country of interest. The most expedient path to up-to-date knowledge in each area is the local or specialized patent agency who will handle the national phase entry at the end of the PCT international phase. Consulting a local expert will help in drafting the PCT disclosure and claims and ensure compliance with national security provisions and other local requirements.

Filing and the international phase

Since the single PCT application represents national filings in 143 countries, it is important to ensure that all of the information supplied at the time of filing, such as applicant names and priority claims, is accurate and that all parts of the application are included with the submission to the receiving office. An error in one of these areas could affect the chances of gaining patent protection in all 143 PCT contracting states. Since coming into force, the safeguards built into the PCT system to protect applicants from the loss of patent rights have been steadily increasing, as outline below.

Failure to pay fees on time

Anytime a fee is due under the PCT, the applicant always has one month to pay the fees following the filing. If the applicant fails to pay within this time limit, the international authority will issue an invitation to pay the fees, including a late fee, within a set time period. An applicant has three opportunities to pay: at filing, within the initial month without penalty and the time period in the invitation with a late fee. If no fees are paid, the international authority will take necessary action resulting from lack of payment.

Omission or erroneous priority claim

If applicant makes an error in listing a priority claim or forgets to list a claim, a correction may be made or the missing claim added within four months of the date of filing; additional time may be available in some cases. To enter a correction or addition, an applicant needs to inform the receiving office or, preferably, the IB of the changes during the applicable time limit.

Missing pages

If an applicant discovers that some or all of the description, claim and/or drawings were left out of the application, incorporation by reference of matter in the priority documents may allow the missing pages to be included. Provided the PCT request contains the required statement relating to incorporation by reference, an applicant can add pages from the priority document(s) into the PCT application without losing the filing date. The applicant always has two months from the filing date to incorporate pages and in some cases may be allowed more time. A request for incorporation by reference must be made to the receiving office within the time limit and with the sheets containing the matter being added and an indication where in the priority document(s) the matter can be found. Incorporation by reference is not accepted by all PCT states, as discussed below.

Late priority filing

When an international application is filed after the end of the priority year, it may be possible to restore the right of priority. A request to restore priority may be filed with the receiving office during the international phase or with the national office during the national phase. If the applicant chooses to file the request during the international phase, two conditions must be met: both the actual filing of the application and the request for restoration must be made within fourteen months of the priority filing. When making the request, the applicant must show that filing within the priority year did not occur despite taking due care required by the circumstances, or that failure to file during the priority year was unintentional. Not all PCT contracting states accept restoration of priority, as discussed below.

Correction of obvious mistakes

If an applicant discovers a mistake has been made in the PCT application, a correction under PCT Rule 91 may be helpful. Rule 91 sets a very tough standard to meet. Firstly, it must be obvious to the authorising authority that what was written was not what was intended. However it must also be obvious to the authorising authority that nothing else than what is offered as a correction could have been intended. The deadline for making a correction under Rule 91 is 26 months from priority.

Preventing or postponing publication

Publication can be prevented by withdrawing the international application or it can be postponed by withdrawing the earliest priority claim. In both cases, the notice of withdrawal, signed by all of the applicants, must reach the IB before technical preparations for publication are completed, 15 days before the scheduled publication date. If publication is postponed by withdrawal of the earliest priority date, it will be rescheduled for 18 months after the earliest remaining priority date in the application.

Reservations to incorporation

The procedures for incorporating matter from the priority document into the international application and restoration of priority for an application filed outside the priority year are not compatible with the national laws of come countries in Asia: India, Indonesia and the Philippines. Until the national laws are changed, these countries have adopted a reservation to the rules and these procedures have no effect during the national phase in these contracting states. The WIPO website has a complete list of all incompatibilities.

Entering the national phase

A brief survey of agents in the South East Asia and Indian subcontinent region revealed a few problems in entering the national phase from international applications. Agents need more time to prepare the application for filing, particularly if a translation is needed. For example, countries like China, Thailand, Indonesia, Vietnam, Korea, and Japan require the translation of specifications to be filed with the patent office. Difficulty in obtaining required documents such as assignments, inventor’s declarations and powers of attorney from clients in enough time to complete the entry process was also mentioned.

To ensure that there are no problems during the national phase entry process or during the subsequent national examination, the applicant should work closely with their local agents. The agent can assist in determining whether preliminary amendments and arguments filed upon entry will help advance the application toward acceptance. The agent can also recommend changes in claim format to conform to local practice as well as check the disclosure for any shortcomings regarding local practice requirements.

The PCT guarantees each applicant at least one opportunity to amend the international application upon entry into the national phase. Most countries offer more than one opportunity to amend. Additionally, the PCT allows for any denied request made during the international phase to be revisited before each national office in the national phase. A postponed or denied request for restoration of priority may also be taken up by the national offices on request of the applicant.

The PCT provides a safe and cost effective option of filing patents in Asia. The disclosure and claims in an international application must be drafted to meet the requirements of all countries of interest. All aspects of the filing must also be carefully reviewed before filing. If there is a mistake, the PCT process, as well as most national laws, provide means for correction so that the application can move smoothly from filing, through the international and national phases, to a grant of the patent right in all countries where protection is desired. Applicants must work closely with their local agent to ensure that the PCT filing works smoothly and efficiently towards proper protection of the invention in Asia.